The Complainant is Inter-Continental Hotels Corporation of Atlanta, Georgia, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Whois Privacy Protection Service by VALUE-DOMAIN of Osaka-shi, Osaka, Japan / #temporarily set# / Agent information set by transfer of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2019. On March 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 14, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 14, 2019.
On March 14, 2019, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On March 14, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent, in English and Japanese, of the Complaint, and the proceedings commenced on March 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’ default on April 10, 2019.
The Center appointed Douglas Clark as the sole panelist in this matter on April 23, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is one of a group of companies collectively known as InterContinental Hotels Group (“IHG”), one of the world’s largest hotel groups. Its InterContinental hotel brand was founded in 1948 and is today represented by 204 hotels with 69,281 guest rooms. The Complainant operates an InterContinental-branded hotel in Kiev, Ukraine.
The Complainant and its affiliates own at least 281 registrations in at least 163 countries or geographic regions worldwide for trademarks that consist of or contain the INTERCONTINENTAL mark. These include a United States INTERCONTINENTAL trademark, first used in 1948 and registered in 1970 (registration number 0890271, registered on April 28, 1970) for use in connection with hotel services, and a Japanese INTERCONTINENTAL trademark registered in September 2004 for use in connection with providing accommodation at hotels and motels (registration number 4798887, registered on September 3, 2004). The Complainant (via IHG or one of the Complainant’s related companies, Six Continents Hotel, Inc.) is the registrant of numerous domain names that contain or are similar to the INTERCONTINENTAL trademark, including created on July 30, 1997.
The disputed domain name was registered on December 27, 2017 using a privacy service “Whois Privacy Protection Service by VALUE-DOMAIN” of Osaka, Japan. The information of the underlying registrant was masked. After the Complaint was filed on March 11, 2019, the Registrar revealed the underlying registrant, being “#temporarily set# / Agent information set by transfer” of Tokyo, Japan. Both the privacy service and the underlying registrant have been named as the Respondent in this proceeding.
According to the evidence submitted by the Complainant, the disputed domain name resolves to a website containing content only in English (the “Website”). The Website includes pay-per-click (“PPC”) links labeled “Intercontinental Kiev Hotel” and “Hotels in Kiev Ukraine”. 5. Parties’ Contentions A. Complainant
The Complainant contends as follows: Identical or confusingly similar
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s INTERCONTINENTAL trademark. The disputed domain name contains the INTERCONTINENTAL trademark in its entirety, constituting a dominant portion of the disputed domain name. The only difference between the disputed domain name and the INTERCONTINENTAL trademark is the addition of the city name “Kiev” where the Complainant operates an InterContinental-branded hotel. Such an addition could not avoid a finding of confusing similarity, nor change the overall impression of the designation, but instead increases potential of confusion. No rights or legitimate interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name and cannot rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) and (iii) of the Policy.
The Complainant has first used its INTERCONTINENTAL trademark as early as 1948 and it and its affiliates own at least 281 registrations in at least 163 countries or geographic regions worldwide for trademarks that consist of or contain the mark INTERCONTINENTAL. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the INTERCONTINENTAL trademark in any manner.
The Respondent included commercial links for third-party websites on the Website, specifically links for services competitive with the Complainant labeled as “Intercontinental Kiev Hotel” and “Hotel in Kiev Ukraine”. The Respondent has failed to show a bona fide offering of goods or services and therefore cannot rely on paragraph 4(c)(i) of the Policy.
The Complainant submits that the Respondent has never been commonly known by the disputed domain name and have never acquired any trademark or service mark rights in it. The Respondent has therefore failed to establish rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy.
By using the disputed domain name in connection with a monetized parking page featuring pay-per-click links, the Complainant contends that the Respondent’ actions are clearly commercial. The Respondent therefore cannot rely on paragraph 4(c)(iii) of the Policy. Registered and used in bad faith
The Complainant contends that since the INTERCONTINENTAL trademark is a well-known mark, the mere registration of the disputed domain name that is confusingly similar to the trademark by the unaffiliated Respondent can by itself created a presumption of bad faith. Given the fame of the INTERCONTINENTAL trademark, it is implausible that the Respondent was unaware of the Complainant when they registered the disputed domain name. Further, the fact that the disputed domain is used as a monetized parking page constitutes bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceedings
Paragraph 11(a) of the Rules states that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
On March 11, 2019, the Complainant filed the Complaint in the English language. On March 14, 2019, the Center notified the parties that the language of the registration agreement for the disputed domain name is Japanese. On the same day, the Complainant submits its requests for the language of the proceedings to be in English. The Complainant argues that the disputed domain name which primarily contains the Complainant’s INTERCONTINENTAL trademark is obviously in English and that the contents of the Website, namely the links to, for example, “Intercontinental Kiev Hotel”, “City Kiev”, and “Hotels in Kiev Ukraine”, are exclusively in English.
The Panel agrees with the Complainant’s submissions and accordingly exercises its authority under paragraph 11(a) of the Rules determines that the present proceedings shall be conducted in English. 6.2. Substantive Elements of the Policy
The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered INTERCONTINENTAL trademarks. It adopts the INTERCONTINENTAL trademark in its entirety, with the addition of the city name “Kiev” where the Complainant operates an InterContinental-branded hotel. Such an incorporation of a name of a city where the Complainant operates one of its InterContinental hotels does not avoid a finding of confusing similarity under the first element, and is apt to increase confusion among Internet users (see Inter-Continental Hotels Corporation v. Mr. Tuan / Mr. Miko / Miss Ha Phuong,WIPO Case No. D2014-1987). The applicable Top-Level-Domain (“TLD”) “.com” is viewed as a standard registration requirement and does not dispel a finding of confusing similarity in this case.
The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests in the disputed domain name. Section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks right or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant, as set out above, has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name has been registered in bad faith and are being used in bad faith.
Given the distinctiveness and popularity of the Complainant’s INTERCONTINENTAL trademark, it is implausible that the Respondent registered the disputed domain name without prior knowledge of the Complainant and its trademark.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Respondent has registered the disputed domain name that contain the Complainant’s well-known INTERCONTINENTAL mark in its entirety. The disputed domain name resolves to the Website, a monetized parking page with PPC commercial links for services competitive with the Complainant labeled as “Intercontinental Kiev Hotel” and “Hotel in Kiev Ukraine”. This indicates the Respondent’s intention to confuse Internet users that the Website is linked to the Complainant’s business, particularly the InterContinental-branded hotel operated by the Complainant in Kiev, Ukraine.
The third element of paragraph 4(a) of the Policy is satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Douglas Clark
Sole Panelist
Date: May 9, 2019
Full & Egal Universal Law Academy